Considerations in Selecting a Trademark

1. What are the steps in selecting a trademark?

Key steps in selecting a trademark include (i) developing a list of candidate marks; (ii) determining whether any other parties are using the same or a confusingly similar mark by performing searches in each jurisdiction where you plan to use the mark; and (iii) examining how the mark will be perceived by the relevant consumers in each jurisdiction of interest.

2. What is involved in the development of a list of candidate marks?

In developing a list of potential candidate trademarks, consider the nature of the mark, including its relative strength or distinctiveness as a trademark. The strength of a mark is related to how readily it is understood by consumers to be a trademark. A strong or distinctive mark is easier to register and to protect from use by others than a mark that is more descriptive—and, hence, weaker.

Trademarks can be categorized on the following spectrum of strength or distinctiveness:

• Fanciful or Coined Marks: The strongest type of mark is a coined or made-up word, often called a fanciful mark. Fanciful marks have no meaning other than as a trademark, (e.g., VERIZON, or PEPSI) and therefore may initially be more difficult for consumers to remember. Such marks, however, give trademark owners the best chance of creating a strong and positive brand association between a mark and its associated goods or services. Once goodwill has been established, fanciful marks provide trademark owners with the broadest scope of protection against third-party use of the same or a similar mark.
• Arbitrary Marks: Arbitrary marks are words that have a common meaning but are applied to goods or services unrelated to that meaning (g., APPLE for computers, or SHELL for gasoline). Once goodwill in the mark is established, arbitrary marks can receive a broad scope of protection against third-party use of the same or a similar mark.
• Suggestive Marks: Suggestive marks, which are not as strong as fanciful or arbitrary marks, suggest some quality or characteristic of the associated goods or services but do not directly describe them. Rather, such marks require some imagination or thought on the part of the consumer to determine the exact nature of the goods or services. Examples of well-known suggestive marks are AIRBUS for airplanes, KITCHENAID for kitchen appliances, and SWEETARTS for candy.
• Descriptive Marks: Descriptive marks, which reside toward the weak end of the distinctiveness spectrum, are marks that directly identify one or more characteristics of the goods or services with which they are associated, for example, AMERICAN AIRLINES for airline services in America. Laudatory words, such as “best” or “quality,” also fall into this category of marks. A descriptive mark is generally not registrable unless it has acquired distinctiveness over a significant period of exclusive use. A mark acquires distinctiveness if, over time, consumers learn to identify it as being associated with a single source. In addition to registrability issues, descriptive marks are also difficult to protect from third-party use because competitive third parties need to use the same or similar words to describe their goods. For example, COLD AND CREAMY as a trademark for ice cream, merely describes attributes of the product and is likely ineligible for protection at first use because other ice cream producers would use these terms in the promotion and sale of their ice cream products. Over time, however, if only one party were to use COLD AND CREAMY to promote its ice cream, it is possible that consumers might look at that designation as a trademark and it would therefore be eligible for both registration and protection from third-party use.
• Generic Terms: A generic term is a word or phrase that is a common term associated with a particular category of goods or services. It cannot function as a trademark and is thus not registrable or protectable. Also, trademarks that are initially distinctive but are not properly used or protected and become identified as the product (rather than the source of the product) are genericized and lose their right to protection from third-party use. “Escalator” and “cellophane” are classic examples of terms that once functioned as trademarks but, through lack of protection, became generic and are now used as the common names for the products, regardless of their source.

In selecting a trademark, keep in mind that local trademark laws in many jurisdictions also prohibit, in the absence of acquired distinctiveness, the registration of marks that are primarily merely a surname, as that surname may be shared by others with an interest in doing business under their name. Such marks typically may not be registered or protected without a showing of acquired distinctiveness (as with descriptive marks).

In addition, in many jurisdictions, marks that identify geographic locations can be difficult to register or protect. Marks that are comprised of the geographic location from where the products or services emanate (whether a street, city, or country) are treated much like descriptive marks or considered descriptive and generally are not registrable without a showing of acquired distinctiveness. For example, MILAN for clothing that is produced in Milan, a city well known for its fashion houses, would likely not be registrable at first use, as other clothing producers from Milan need the ability to identify Milan as the place where their products originate.

In some countries, legal designations that identify particular regions known for specific goods or services have been afforded unique protections that limit the ability to use those designations for such goods or services unless they are produced in those regions. This is particularly true of wine, other alcoholic beverages, and food products that are known to be produced in certain regions. These protections, often referred to as geographical indications or appellations of origin, are distinct from trademark rights. For example, in some countries, “Champagne” may be used only with regard to sparkling wine that is produced in Champagne, France.

For more information on developing a candidate list of distinctive marks, see the INTA Practitioners’ Checklist “Trademark Creation.”

3. What are best practices for searching and clearance of potential trademarks?

Once you have developed a list of potential trademarks, the recommended best practice is to conduct clearance searches to determine whether other parties have already registered and/or used the same or a similar mark. These searches should be conducted early in the process of choosing a new mark because it is better to know whether others may claim rights in the mark before you have made a substantial investment. You should focus your searches in each jurisdiction where you have a real intention to sell or produce your goods or services.

While you may be able to search databases that many countries make available online for public use, it is strongly recommended that you seek guidance from a local trademark professional to determine whether your mark is truly available in each of your locations of interest. For more details, see the INTA Practitioners’ Checklist “Trademark Clearance Search” (member login required).

4. What other factors should you consider in selecting a trademark?

You may also consult a local trademark professional to advise how the mark may be perceived in the real world (e.g., whether a mark has an undesirable meaning; would create confusion as to the nature of the product or service; or would be difficult to read, spell, or pronounce in that country). For example, the Chevrolet NOVA car did not sell well in many Spanish-speaking countries because no va in Spanish means “does not go.” Local guidance can be invaluable and will help you avoid such costly mistakes. It is also important to make sure that the Internet domain name for your trademark is available in your locations of choice as a Web presence might be  a very important aspect of your product or service.

Finally, once you are confident in your trademark selection you should promptly (i) file an application in the jurisdictions where you plan to use the mark; and (ii) introduce your product or service to market. Commencing use of your mark is especially important in jurisdictions such as the United States and Canada, which follow a “first to use” policy (i.e., priority rights in the trademark are based on first use). Other jurisdictions, such as France and Benelux, follow a “first to file” policy, meaning that priority rights in a mark are assigned to the party that first files an application for registration of the mark. In “first to file” jurisdictions, timely filing of your application is especially key.

See also Trademark Searching Fact Sheet

Additional Resources

• Country Guides: Essential Information on Trademark Protection Worldwide
  Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions. Membership required.

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